26 April 2015

How International Treaties Help Inventors With Patent Strategy

GlobeThere is no such thing as a ‘world patent’.  As matters currently stand – and as I expect them to remain beyond the term of my natural life – there is no country on Earth that is willing to completely forego the right to determine what qualifies for a patent monopoly within its borders, or the right to collect ongoing fees to maintain this privilege.

So, anybody wishing to obtain patent protection in multiple markets will necessarily need to pursue some form of application in each corresponding jurisdiction.  With every country having its own patent laws (and this is true even in places, such as Europe, where some form of regional process is available), obtaining all of these patents can certainly become a complex, time-consuming, and expensive procedure.

Fortunately, however, over the years a majority of countries have got together to establish some basic standards, agreements and conventions that provide at least some certainty and simplification for inventors and companies seeking protection for their inventions in multiple jurisdictions.  In this article I want to talk briefly about the three I regard as being the most significant:
  1. the Paris Convention for the Protection of Industrial Property, which ensures that all members will recognise the priority of an application filed in another member country for at least 12 months;
  2. the Patent Cooperation Treaty (PCT), which creates a central mechanism for filing an ‘international application’ that can delay the costs and complexity of individual national/regional filings for at least 18 months longer than would otherwise be possible; and
  3. the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which sets minimum standards for patentability, guarantees non-discriminatory treatment of applicants and applications, and sets limits on the scope of national laws to exclude specific subject matter from patent-eligibility.
Knowing a little about these three international agreements is a good start on developing an international patenting strategy, although I would always recommend that you ultimately seek the assistance of somebody who works within these systems all the time, and is familiar with their many detailed benefits, and pitfalls.

The Paris Convention

The Paris Convention for the Protection of Industrial Property was first agreed upon in 1883, and upon its commencement in 1884 had 10 member states.  As of today, there are 176 contracting members.

Some of the benefits that the Paris Convention provides to inventors are:
  1. a right of national treatment, which means that an individual member country must treat an applicant from a foreign country that is also a Paris Convention member is exactly the same way as a local citizen or resident;
  2. a guarantee of independent treatment, which ensures that, on the one hand, no country is obliged to grant a patent merely because an equivalent patent has been granted elsewhere but that, by the same token, a patent cannot be refused or terminated in one country just because it has been refused or terminated somewhere else;
  3. a right of the inventor to be named as such in any patent;
  4. a guarantee that a patent cannot be refused or terminated merely because use of the invention might be limited by local laws; and
  5. limitations on the rights of individual countries to impose upon patent owners by granting compulsory licenses.
However, nice as all these may be, by far the best-known guarantee provided by the Paris Convention is the right of priority.

For patent applicants, this means that, on the basis of an initial application filed in one member country, the applicant may, within 12 months, apply for protection in any of the other member countries.

The subsequent applications must then be treated ‘as if’ (not an exact quotation, but sufficient for present purposes) they had been filed on the same day as the first application.  Most importantly, these applications have priority over other applications filed during the relevant 12-month period.  Furthermore, the subsequent applications will not be affected by any event that takes place in the interval, such as the publication or public use of the invention.

As a result, applicants seeking protection in several countries are not required to file all of their applications at the same time, but have a year to decide in which countries they wish to proceed.

So important is the Paris Convention for this purpose, that the subsequent applications claiming the right of priority are often simply called Convention Applications.

It is perhaps worth pointing out that in 1883, when the terms of the Paris Convention were first struck, there was a very practical reason for allowing applicants a 12 month period to file their subsequent applications.  The application requirements in foreign countries were often very different, and communication of lengthy documents, and any originally-signed forms required, was conducted by land and sea.  These days, thanks to ongoing harmonisation efforts, instant global communications, and electronic filing mechanisms, applicants can get away with doing very little for most of the 12 month period, and making their filing decisions at the very last minute.

Patent attorneys hate this!

The Patent Cooperation Treaty (PCT)

If you want to sound knowledgeable in the ways of the global patent system, you should try bandying around the terms ‘PCT application’ and ‘international application’ with great confidence!  Here is all the information you really need to be able to do this (although I still recommend that you seek professional advice on how best to make use of the PCT system in your patenting strategy, or even whether it is right for you at all).

The PCT was originally agreed in 1970, however it was not until 1978 that the first countries actually started accepting applications via the PCT system.  On 24 January 1978 the first 13 countries (including the UK, Germany and the USA) became bound by the Treaty.  By the end of 1978 this had increased to 20.  Australia joined on 31 March 1980, Canada on 2 January 1990 and New Zealand on 1 December 1992. 

Today there are 148 PCT member states (including, perhaps surprisingly, countries such as North Korea and Cuba), with the most recent being Saudi Arabia and Iran.  When those two countries joined, back in 2013, I wrote an article titled Where Can You Not Get a Patent Via the PCT? which is worth a read if you are really interested in the coverage.

Early versions of the PCT were, in some respects, much more complex than the system as it exists today.  There were all sorts of different deadlines and actions required in order to take advantage of the procedures available in various countries, which I am sure many people found awfully confusing.

These days, however, for the overwhelmingly vast majority of applicants, the most important aspects of the PCT system are relatively straightforward.

Firstly, anybody who is a national or a resident of any one PCT member country can file a PCT application which will be recognised as providing a national filing date by all 148 PCT members.

Second, a PCT application can claim priority from a national application filed within the previous 12 months in any Paris Convention member country.  This is true even if the relevant application was filed in a Paris Convention country that is not a PCT member (although the PCT applicant must still satisfy the nationality/residency requirement mentioned above).

Third, a PCT applicant must proceed with any desired national applications based on the PCT filing within a fixed period (which is generally not less than 30 months) from their original filing date, i.e. either the PCT filing date, or the earliest filing date of any priority application claimed by the PCT application.

There are various other procedures – now mostly optional – that can take place during the period when the PCT application is pending.  However, the bottom line for almost all applicants is simply that filing a PCT application delays the commencement of national procedures, and all associated costs, by at least 18 months beyond the 12 month period provided by the Paris Convention.

Of course, it will be appreciated from the above explanation that a PCT application involves an additional cost in the overall patenting process.  However, it is a cost that can provide vital breathing room before the potentially far greater costs of translation, filing and examination of multiple national or regional applications are incurred.


Nobody ever says ‘Agreement on Trade-Related Aspects of Intellectual Property Rights’ and, while it is not quite a proper acronym of the full name, I guess that TRIPS just… well.. trips off the tongue much more easily!  TRIPS was first established in 1994, along with the World Trade Organization (WTO), and is binding on all WTO members, except to the extent that certain exclusions and implementation delays are provided to developing and least-developed nations.

While knowing about ‘Convention Applications’ and ‘the PCT’ will make you sound pretty patent-savvy, talking knowledgeably about TRIPS will make you seem like a veritable IP expert!  My advice, however, is that you should not try to talk knowledgeably about TRIPS.  It is a minefield.  If you ever hang around in the corridors of patent attorney or IP law firms, you may catch snippets of ‘I think there’s something in TRIPS about that’ or ‘surely [such-and-such a proposed law] would violate our obligations under TRIPS?’  Yet nobody ever seems to be entirely sure…

Anyway, the part of TRIPS that is most relevant to patent applicants is Section 5 of Part II, which encompasses Articles 27 to 34.  In a nutshell, the benefits to inventors provided in this part of the TRIPS Agreement are:
  1. a guarantee that, with just a handful of permitted (though not mandated) exceptions, patents will be available ‘in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application’;
  2. a guarantee of minimum rights conferred by a patent, including the right to exclude others from exploiting a patented invention, and the right to assign (e.g. sell) a patent, and to license the rights to exploit a patent;
  3. limitations on the power of governments to restrict the rights of patent owners, or to permit others (including government authorities) to exploit the patent rights without authorisation of the patent owner;
  4. a guarantee of adequate remuneration in any case that others are permitted to exploit the patent rights, e.g. under a compulsory licence;
  5. a guarantee that judicial review will be available of any decision to revoke or forfeit a patent; and
  6. a guaranteed minimum term of 20 years from filing will be available for any valid patent.
TRIPS also ensures that an applicant for a patent in any member country must at least meet certain minimum obligations, most notably that an invention must be disclosed ‘in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art’.  Most countries in fact require more than this so meeting only the minimum TRIPS standard in, say, a PCT application would generally not be sufficient.

Conclusion – Putting it All Together

Between them, the Paris Convention, the PCT and TRIPS ensure a high degree of uniformity across the vast majority of the world’s significant markets.  The combined benefits to patent applicants include:
  1. an assurance of treatment in each country that is on par with a ‘local’ applicant;
  2. the availability of a period of at least 12 months, and (via the PCT) usually at least 30 months, between the filing of a single initial application and the requirement to file further applications in every country where protection is desired; and
  3. a guarantee of minimum standards and scope of protection, and limitations on government power to restrict or co-opt valid patent rights.
However, as with many complex areas of law and technology, the devil can be in the details.  Greater uniformity of rules and procedures brings many benefits, but it also amplifies the significance of the smaller differences that distinguish one national system from another.

For example, while the PCT system is hugely beneficial in allowing a single application to cover – at least for a period – 148 countries around the world, ensuring that this one application will satisfy the various legal requirements in whichever of those countries are ultimately chosen is no mean feat.  The differences between the laws in Australia, the US, Europe, China and Japan, for example, may be subtle, but in some cases they are not insignificant.  And, as I noted just last week in discussing provisional applications, these subtleties need to be considered not only at the time of PCT or Convention filings, but also at the earlier stage of preparing the original priority application.

As the shrinking world makes some things easier, it continues to make others more complex!


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